11027061 (B.P.A.I. Mar. 5, 2012)

Ex Parte Hornik et al

Board of Patent Appeals and InterferencesMar 5, 2012

11027061 (B.P.A.I. Mar. 5, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/027,061 12/30/2004 Jeremy M. Hornik 247079-000348USPT 6193 70243 7590 03/05/2012 NIXON PEABODY LLP 300 S. Riverside Plaza 16th Floor CHICAGO, IL 60606 EXAMINER PINHEIRO, JASON PAUL ART UNIT PAPER NUMBER 3717 MAIL DATE DELIVERY MODE 03/05/2012 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE 1 ___________ 2 3 BEFORE THE BOARD OF PATENT APPEALS 4 AND INTERFERENCES 5 ___________ 6 7 Ex parte JEREMY M. HORNIK, 8 DION K. AOKI, 9 JOEL R. JAFFE, 10 and JAMES J. POOLE 11 ___________ 12 13 Appeal 2010-008808 14 Application 11/027,061 15 Technology Center 3700 16 ___________ 17 18 19 Before ANTON W. FETTING, BIBHU R. MOHANTY, and 20 MEREDITH C. PETRAVICK, Administrative Patent Judges. 21 22 FETTING, Administrative Patent Judge. 23 24 25 DECISION ON APPEAL 26 27 28 29 Appeal 2010-008808 Application 11/027,061 2 STATEMENT OF THE CASE1 1 Jeremy M. Hornik, Dion K. Aoki, Joel R. Jaffe, and James J. Poole 2 (Appellants) seek review under 35 U.S.C. § 134 (2002) of a non-final 3 rejection of claims 1-8 and 10-26, the only claims pending in the application 4 on appeal. We have jurisdiction over the appeal pursuant to 5 35 U.S.C. § 6(b) (2002). 6 The Appellants invented a wagering game with a high-payout 7 percentage gaming feature (Spec. ¶ 0001). 8 An understanding of the invention can be derived from a reading of 9 exemplary claim 1, which is reproduced below [bracketed matter and some 10 paragraphing added]. 11 1. A gaming system for playing a wagering game, comprising: 12 [1] an input device adapted to 13 receive an input from a player of a base wagering game, 14 the input comprising an input of 15 a first wager to play a base wagering game 16 and 17 a second wager specifically dedicated to the 18 enabling of a gambling feature, 19 and 20 output a signal 21 to a processor 22 corresponding to the input from the player; 23 [2] a processor 24 configured to randomly select 25 a base wagering game outcome 26 from a plurality of base wagering game 27 outcomes; 28 and 29 1 Our decision will make reference to the Appellants’ Appeal Brief (“App. Br.,” filed April 1, 2010) and Reply Brief (“Reply Br.,” filed May 26, 2010), and the Examiner’s Answer (“Ans.,” mailed May 5, 2010). Appeal 2010-008808 Application 11/027,061 3 [3] a gambling feature 1 incorporating a game 2 statistically biased in favor of the player 3 such that the payout of the gambling feature will 4 exceed 100% 5 over a statistically significant time period, 6 said gambling feature being enabled 7 in response to input 8 of the second wager 9 and said base wagering game outcome 10 being a start-gambling feature outcome. 11 12 The Examiner relies upon the following prior art: 13 Mathis US 5,380,008 Jan. 10, 1995 Yoseloff US 6,312,334 B1 Nov. 6, 2001 Claims 1-8 and 10-26 stand rejected under 35 U.S.C. § 112, second 14 paragraph, as failing to particularly point out and distinctly claim the 15 invention. 16 Claims 1-8 and 10-26 stand rejected under 35 U.S.C. § 103(a) as 17 unpatentable over Yoseloff and Mathis. 18 19 ISSUES 20 The issue of indefiniteness turns primarily on whether one of ordinary 21 skill in the statistical arts understood the phrase “statistically significant time 22 period.” The issue of obviousness turns primarily on whether Mathis 23 describes an actual game as contrasted with an intermediate design point in 24 which an expected payout would exceed the intake. 25 26 Appeal 2010-008808 Application 11/027,061 4 FACTS PERTINENT TO THE ISSUES 1 The following enumerated Findings of Fact (FF) are believed to be 2 supported by a preponderance of the evidence. 3 Facts Related to Claim Construction 4 01. A start-gambling feature outcome is a winning combination in the 5 wagering game. Spec. ¶ 0036. 6 Facts Related to the Prior Art 7 Mathis 8 02. Mathis is directed to slot machines. Mathis 1:5-10. 9 03. Mathis contains the sentence: “This game will thus pay out more 10 than it takes in.” Mathis 3:60. The following sentence states that 11 “[t]he designer must now reduce the number of BARS to make the 12 Pay-out Percentage less than 100%.” Mathis 3:60-62. 13 Knowledge Of One In The Statistical Arts 14 04. One of ordinary skill in the statistical arts understood the phrase 15 “statistically significant time period.” 16 17 ANALYSIS 18 Although we are reversing the Examiner, we find that both rejections 19 raise legitimate issues for resolution at the appellate level, and we find the 20 Examiner properly raised these issues as such so their presence and their 21 resolution could be made of record. 22 23 Claims 1-8 and 10-26 rejected under 35 U.S.C. § 112, second paragraph, as 24 failing to particularly point out and distinctly claim the invention. 25 Appeal 2010-008808 Application 11/027,061 5 We are persuaded by the Appellants’ argument that one of ordinary 1 skill understood the limitation that the payout of the game will exceed 100% 2 over a statistically significant time period. Appeal Br. 15-17. 3 This limitation does not require that such a time period be measured, 4 or even used, only that the game exhibit the recited characteristic over such a 5 time period. This may be determined analytically based on the game design, 6 and does not require empirical evidence from actual performance to 7 demonstrate the presence or absence of this characteristic. 8 This concept is taught generally in a first semester undergraduate 9 statistics course, such that such a student, let alone one of ordinary skill, 10 would have understood the metes and bounds of this limitation. 11 12 Claims 1-8 and 10-26 rejected under 35 U.S.C. § 103(a) as unpatentable 13 over Yoseloff and Mathis. 14 We are persuaded by the Appellants’ argument that neither reference 15 describes a game that would actually be played in accord with the claims 16 statistically biased in favor of the player such that the payout of the game 17 will exceed 100% over a statistically significant time period. Appeal Br. 18-18 21. 19 Mathis contains the sentence: “This game will thus pay out more than 20 it takes in.” Mathis 3:60. The Examiner found that Mathis does not disclose 21 anything that would teach against this game. This finding is counter to the 22 following sentence, which states that “[t]he designer must now reduce the 23 number of BARS to make the Pay-out Percentage less than 100%.” Id. at 24 3:60-62. This sentence clearly states that such a game paying out more than 25 it takes in is not one that a designer would use. 26 Appeal 2010-008808 Application 11/027,061 6 CONCLUSIONS OF LAW 1 The rejection of claims 1-8 and 10-26 under 35 U.S.C. § 112, second 2 paragraph, as failing to particularly point out and distinctly claim the 3 invention is improper. 4 The rejection of claims 1-8 and 10-26 under 35 U.S.C. § 103(a) as 5 unpatentable over Yoseloff and Mathis is improper. 6 7 DECISION 8 The rejection of claims 1-8 and 10-26 is reversed. 9 10 11 REVERSED 12 13 14 hh 15